Ex Parte David et al

Board of Patent Appeals and Interferences

Mar 20, 2007

10173259 (B.P.A.I. Mar. 20, 2007)

The opinion in support of the decision being entered
today was not written for publication and
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ETIENNE DAVID, JEAN-MICHEL DURET,
DIDIER HERNANDEZ,
DENIS SANDELIS and ALAIN WLOCZYSIAK
____________

Appeal 2006-1263
Application 10/173,259
Technology Center 3700
____________

Decided: March 20, 2007
____________

Before TERRY J. OWENS, MURRIEL E. CRAWFORD, and
JENNIFER D. BAHR, Administrative Patent Judges.

MURRIEL E. CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2006-1263
Application 10/173,259

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 (2002) from the Examiner’s
final rejection of claims 1-3, 6, 8, 10-12 and 14-20, which are all the claims
pending is this application. Claims 4, 5, 7, 9 and 13 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).
The Appellants’ invention relates to a bushing for fixing in air
injections holes pierced through the side walls of a combustion chamber for
a gas turbine (Specification 4).
We need only discuss independent claim 1 which reads as follows:
1. A combustion chamber for a gas turbine comprising
radially outer and radially inner side walls interconnected by
an end wall, the combustion chamber being received in a
casing so as to define an annular space between the
combustion chamber and the casing, in which space there is
a flow of air for combustion, for dilution, and for cooling the
combustion chamber, the side walls of the combustion
chamber being pierced by a plurality of holes having
respective bushings fixed therein to define air injection
passages for injecting air into the combustion chamber, each
bushing comprising a peripheral wall in which at least one
additional orifice is formed that opens out into the
combustion chamber in the immediate vicinity of the side
wall of the combustion chamber in which said bushing is
fixed so that the air passing through said orifice flows
substantially along said side wall, wherein each bushing is
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Application 10/173,259

of substantially elliptical right section, the peripheral wall of
each bushing including at least one groove opening out into
the annular space and into which the or each orifice opens
out so as to be fed with air and so as to cool the peripheral
wall of the bushing.

The Examiner rejects claims 1-3, 6, 10-12, 14-18 and 20 under
35 U.S.C. § 103 as being unpatentable over Monk in view of Rice; and
claims 8 and 19 under 35 U.S.C. § 103 as being unpatentable over Monk in
view of Rice and Mumford.1
THE PRIOR ART
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Monk US 3,656,297 Apr. 18, 1972
Mumford US 4,475,344 Oct. 09, 1984
Rice US 6,351,949 Mar. 05, 2002
(filed Sep. 03, 1999

1On page 4 of the Examiner’s Answer mailed September 28, 2005, beneath
the heading “(10) Grounds of Rejection” the Examiner states “[t]hese
rejections are set forth in a prior Office Action, mailed May 20, 2004.
However on page 2 of the Office action mailed June 7, 2005 the Examiner
states that “the final rejection of May 20, 2004 is hereby withdrawn”, and
restates the rejections anew. Therefore the Examiner’s answer should
reference the Final rejection mailed June 7, 2005 and not the withdrawn
rejections mailed May 20, 2004. Accordingly, we base our decision on the
Final rejection mailed June 7, 2005.
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Application 10/173,259

The Examiner contends that Monk discloses the invention as claimed
except for the bushing having an elliptical right section. The Examiner
relies on Rice for teaching an elliptical right section bushing. Appellants
contends that Monk does not teach a removable bushing (Br. 6) and further
that there is no suggestion in Monk to modify its flow passage A to be a
removable bushing (Br. 8) as taught by Rice.
We affirm.
ISSUES
The first issue before us is whether the Appellants have shown that the
Examiner erred in finding that Monk teaches a bushing as recited in
independent claims 1, 11 and 14.
The second issue before us is whether the Appellants have shown that
the examiner erred in holding that modifying the Monk device so as to
include an elliptically shaped bushing, as taught by Rice, would not destroy
the function of the Monk device.
FINDING OF FACT
Appellants’ invention comprises a bushing (Figure 3, element 8) for
fixing in air injections holes (Figure 1, element 6) pierced through the side
walls of a combustion chamber for a gas turbine (Specification at 4).
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The bushing is configured to introduce air into the combustion
chamber. The bushing has a peripheral wall and at least one additional
orifice (Figure 3, element 16) formed in the peripheral wall that opens into
the combustion chamber. The orifice directs air substantially along the side
wall of the combustion chamber. The bushing is of substantially elliptical
right section (Specification at 4; see Figure 3).
Monk describes a bushing formed integrally in a combustion chamber
or as a separate member (col. 1, ll. 18-20) meeting all the limitation of Claim
1 except for the bushing having a substantially elliptical right section (see
Figure 2).
Rice describes bushings pierced through the side walls of a
combustion chamber for a gas turbine having a substantially elliptical right
section (col. 5, ll. 5-10; Figure 3).
PRINCIPLES OF LAW
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In
re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Moreover,
in evaluating such references it is proper to take into account not only the
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specific teachings of the references but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom. In re Preda, 401
F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Combining the teachings of the references relied upon by the Examiner does
not involve an ability to combine their specific structures. In re Nievelt, 482
F.2d 965, 179 USPQ 226 (CCPA 1973).
ANALYSIS
We turn first to the Examiner's rejection of claims 1-3, 6, 10-12, 14-18
and 20 under 35 U.S.C. § 103 as being unpatentable over Monk in view of
Rice.
The Appellants’ argument that Monk does not teach a removable
bushing and further that there is no suggestion in Monk to modify its flow
passage A to be a removable bushing is not persuasive. The Appellants’
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argument is not commensurate with the scope of the claims. The claims
recite “bushings fixed therein to define air injection passages” (claim 1, line
6), “A busing for fixing in air injection holes’ (claim 11, line 1), and
“bushings . . . being fitted in one of said air injection holes” (claim 14, lines
3-4). Appellants’ claims do not require that the bushings are removable.
The specification broadly defines bushings as made by precision
casting and dimensioned to the size of the air injection holes (specification at
6). The dictionary defines bushings as: “1an insulating liner in an opening
through which conductors pass,” as “a cylindrical metal lining used to
reduce friction,” (WordNet 2.1. Princeton University) and “a fixed or
removable cylindrical lining used to constrain, guide, or reduce friction,”
(The American Heritage Dictionary of the English Language (4th ed. 2000)).
The limitation “removable” has not been claimed and the term “bushing” has
not been defined to mean removable.
In any case, Monk discloses a device having an inlet that may be
“formed integrally in a combustion chamber or as a separate member which
can be joined to the combustion chamber by welding” (Column 1, lines
18-20). In this regard we note that the device of Monk is removable to the
extent that the device disclosed on page 6 of Appellants’ disclosure depicts a
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device fixed in the holes of the combustion chamber wall by welding or
brazing, and for reasons of cost and ease of repair, it is advantageous for the
bushings to be fixed by welding.
Appellants further argue that modifying the integral flow passage A of
Monk so as to include the elliptically shaped bushing as taught by Rice,
would render Monk unsatisfactory for its intended purpose because it would
“detrimentally interfere with the cooling system used in Monk” because the
Rice’s bushing does not have orifices for passage of cooling air substantially
along the side wall of the combuster (Br. 9). Rice was relied upon solely
for its teaching of bushings in a combustion chamber having a substantially
elliptical right section (column 5, ll. 5-10; Figure 3). The Examiner’s
combination of Monk in view of Rice does not require being able to
physically place the removable bushing of Rice into an opening in the
combustion chamber sidewall of Monk. Combining the teachings of
references does not involve an ability to combine their specific structures.
Modifying the shape of the flow passage A in Monk would not interfere with
the cooling system used to cool the side walls of the combustion chamber.
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In view of the foregoing, we will sustain the Examiner's rejection of
claim 1. We will also sustain the Examiner's rejection of claims 2, 3, 6,
10-12, 14-18 and 20 because the Appellants have not argued the separate
patentability of these claims. See In re Nielson, 816 F.2d 1567, 1572, 2
USPQ2d 1525, 1528 (Fed. Cir. 1987).
We turn next to the Examiner’s rejection of claims 8 and 19 under 35
U.S.C. § 103 as being unpatentable over Monk in view of Rice and
Mumford
Appellants rely on the same argument as stated above and therefore,
we sustain the Examiner’s rejection of claims 8 and 19 for the same reasons
as stated above.
CONCLUSION
On the record before us, Appellants have not shown that Monk as
modified by Rice does not teach or suggest each and every claim limitation
so as to result in the claim 1 requirement for “each bushing is of
substantially elliptical right section . . . .”

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Application 10/173,259

DECISION
The Examiner’s rejection of claims 1-3, 6, 8, 10-12 and 14-20 is
Affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a) (1) (iv).

AFFIRMED

MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

MEC
vsh
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Appeal 2006-1263
Application 10/173,259

OBLON, SPIVAK, MCCLELLAND,
MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA VA 22314
11